Patent ineligibility decision reversed and remanded as claim is “not rendered ineligible for patent simply because it involves an abstract concept”

Cardionet, LLC et al. v. Infobionic, Inc.

Docket No. 2019-1149
April 17, 2020

Brief Summary: DC patent ineligibility decision (section 101) reversed and remanded (“not rendered ineligible for patent simply because it involves an abstract concept”).

Summary: CardioNet (CN) appealed DC dismissal of its infringement complaint after holding the asserted claims related to cardiac monitoring technology patent ineligible under section 101. Independent claim 1 of CN’s US 7,941,207 “detects beat-to-beat timing of cardiac activity, detects premature ventricular beats (irregular beats that interrupt the normal heart rhythm), and determines the relevance of the beat-to-beat timing to atrial fibrillation or atrial flutter, taking into account the variability in the beat-to-beat timing caused by premature ventricular beats”. The dependent claims “further define the features of the device or its operation” (e.g., “relevance determination logic is to accommodate variability”, “compare times between R-waves”, “collecting…and transmitting the data”). The FC panel explains that “[t]he ‘207 patent describes a number of advantages achieved by the claimed cardiac monitoring device” (e.g., “can more accurately distinguish atrial fibrillation and atrial flutter from other types of arrythmias”). The DC concluded that “the ‘idea of using a machine…may well improve the field of cardiac telemetry,’ CardioNet ‘d[id] not identify improvements to any particular computerized technology.’” The FC reviewed the decision de novo (Berkheimer, FC 2018) and explained the Alice two-step test (Alice, US 2014; “abstract ideas”, “the longstanding rule that ‘[a]n idea of itself is not patentable’”, but “an invention is not rendered ineligible for patent simply because it involves an abstract concept”). Under Alice step one, the court must “consider the claims ‘in their entirety…as a whole’” (McRO, FC 2016; Chamberlain, FC 2019 (“the specification is helpful”); Data Engine, FC 2018 (Alice step two not required “[i]f the claims are not directed to a patent-ineligible concept under Alice step 1”). Under Alice step one, the FC panel concluded that “[w]hen read as a whole,” claim 1 “is directed to an improved cardiac monitoring device and not to an abstract idea”, and not “a result or effect that itself is the abstract idea” (e.g., do not “merely invoke generic processes and machinery” (McRO); “the claims ‘focus on a specific means or method that improves’ cardiac monitoring”, “the written description confirms our conclusion”, “dependent claims…further specify the physical features or operation of the device…each…narrows the device’s specific technical features or operations”). The FC panel explained CN’s claims are similar to those of Visual Memory (FC 2017) which found claims “directed to an improved computer memory system, not the abstract idea of categorical data storage” to be patent-eligible (also as in McRO (patent-eligible “method for automatically animating lip synchronization”)). The FC panel also found the DC incorrectly assumed “that the claims are directed to automating known techniques” (e.g., “nothing in the record supports” DC finding “that doctors long used the claimed diagnostic processes”) and disregarded “the written description’s recitation of the advantages of the claimed invention”.

The FC panel also explained that “[t]he analysis under Alice step one is whether the claims as a whole are ‘directed to’ an abstract idea, regardless of whether the prior art demonstrates the idea or other aspects of the claim are known, unknown, convention, unconventional, routine, or not routine” (“in neither Bilski nor Alice did the Court rely on an examination of the prior art as part of its step one inquiry”; Diamond v. Diehr (US 1981); Am. Axle, FC 2019; Data Engine, FC 2018; Enfish, FC 2016 (“confirms this point”)). It also explained that “[c]ontrary to the dissent’s suggestions, we do not hold today that it is impermissible for courts to ‘look[] outside the intrinsic evidence’ as part of their Alice step on inquiry”. The DC decision was therefore reversed and remanded.

This entry was posted in Patent Eligibility (101), Software. Bookmark the permalink.

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